WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dogan Gazetecilik A.S. v. Internet Amele Birligi
Case No. D2008-0751
1. The Parties
The Complainant is Dogan Gazetecilik A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Internet Amele Birligi, Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <milliyet.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 15, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced June 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 24, 2008. A Response was filed with the Center on June 24, 2008. However, the submitted Response counted more than 70 pages and was therefore not in conformity with paragraph 5(b) UDRP Rules and paragraph 10(b) of the WIPO Supplemental Rules.
The Center appointed Thomas M. Legler, Alan L. Limbury and Sir Ian Barker as panelists in this matter on August 6, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In view of the above mentioned non conformity of the Response with the applicable rules, the Panel invited the Respondent by procedural order dated August 8, 2008 to file on or before August 15, 2008 a Response respecting the 5000 words limit and following roughly the WIPO model response. On August 15, 2008, the Respondent filed its amended Response which has been taken into account by the Panel for the present decision.
4. Factual Background
The Complainant Dogan Gazetecilik A.S. is a subsidiary of Dogan Yayin Holding A.S., a leading Turkish publishing company and the publisher of Turkey's well-known media brand and newspaper “Milliyet”. It was established on November 12, 1960 (Annex 6).
The Respondent is Mr. Suleyman Sahin acting for Internet Amele Birligi.
The Respondent registered the domain name <milliyet.net> on February 20, 1999.
The domain name <milliyet.net> is being diverted to Respondent's website “www.amele.net”.
5. Parties' Contentions
The Complainant submits various excerpts from trademark registers and alleges that it is the holder of various design trademarks as well as of the international word mark MILLIYET registered on March 12, 1998 in classes 16, 35, 38 and 41 (Annex 5)
The Complainant indicates that it has been the legal owner of the domain name <milliyet.com> since April, 1996 and of the domain name <milliyet.com.tr> since October 15, 1996 (Annex 7).
The Complainant therefore concludes that it has proven the first element under Paragraph 4(a) of the Policy.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has in particular made no claim that he is using the Domain Name in connection with a bona fide offering of goods and services in the meaning of paragraph 4(c)(i) of the Policy.
According to the Complainant, the Respondent would only have a right to the domain name <milliyet.net> if the Complainant had specifically granted that right, which is not the case: In particular, the Complainant has not licensed or otherwise permitted the Respondent to use the mark MILLIYET or to apply for or use any domain name incorporating that trade/service mark.
Moreover, the Respondent has no legitimate interest in using the domain name <milliyet.net> and does not use (commercially or non-commercially) the Domain Name.
Furthermore, the Respondent has acquired no trademark or service mark rights and is not known by the Domain Name according to paragraph 4(c)(ii) of the Policy.
The Complainant is also of the opinion that the Respondent has registered and used the Domain Name in bad faith pursuant to paragraph 4(b) of the Policy.
The Complainant makes this conclusion on the basis of the fact that the domain name <milliyet.net> is diverted to the web site “www.amele.net”, in order to put pressure on “Milliyet” and force the Complainant to reach a settlement. The word “amele” would be a slang word indicating a human being without any talent or any intellectual background. When internet users try to reach “Milliyet”, they will find the website “www.amele.net” which seems to be simply used for personal and not commercial purposes but is displaying inappropriate content.
Accordingly, the Respondent tarnishes the Complainant's reputation and goodwill by using the Domain Name to the amele-website. In addition, the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
Pursuant to the Complainant, the Respondent must have known about the Complainant's trademark at the time of registration of the Domain Name. It cannot have ignored the fact that “Milliyet” is a registered and protected well-known trademark of the Complainant. This has to be considered as an inference of bad faith.
Furthermore, the Respondent provided false contact information in the domain name registration, an act which is widely recognized as an indication of bad faith.
The Respondent's bad faith is finally also evidenced by the fact that the Respondent has registered various corporate or trade names of other companies, with which the Respondent has no connection whatsoever.
For example, the Respondent has also registered the domain name <turkcell.org>. Pursuant to the Complainant, “Turkcell” is a well-known Turkish GSM mobile operator.
For all these reasons and in accordance with Paragraph 4(b) of the Policy, the Complainant requests the Administrative Panel that the Domain Name be transferred to the Complainant.
The Respondent rejects the argument made by the Complainant that the domain name <milliyet.net> is allegedly identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
According to the Respondent, “Milliyet” means “nationality”. The words “nationality”, “nationalism” and “nationalist” are important words for Turkish people. According to linguistic and historical facts, the word “Milliyet” is common and widely used not only in Turkish language but also in Arabic, Iranian, Urdu and other dialects of Turkish like Azeri and Uzbek. Words derived from “Milliyet” are also widely used. For instance, “Miliyetçilik” is used in the name of political parties and was one of the main principles of Ataturk's reforms.
Therefore, the word “Milliyet” could in the Respondent's opinion never be used solely as a trademark or any kind of symbol for a company with financial motives.
The Respondent alleges that it has rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
According to the Respondent Suleyman Sahim and his “Internet Amele Birligi”, being the Domain Name registrant of record, he and his organisation were one of the first Internet users in Turkey.
In 1996, Suleyman Sahim created with his friends “Internet Amele Birligi”, which is a non profit cyber organization. In February 1997, the Respondent registered the domain name <amele.org>.
Having the project to share his traveling experiences and in order to promote peace among nations, the Respondent also registered the domain name <letstravelforpeace>, with “com”, “net” and “org” extensions, in 2006.
Because of his personal projects (books, travel memories), the Respondent registered the Domain Name <milliyet.net> and other domain names related to Turkish nationality, culture and peace, for instance: <travelturkiye.com>, <turkistan.net>, <halk.org> (means Nation), <terror.org>, <gerilla.org>. Respondent also has <mydictionary.net> and <sozluk.net> which are online dictionaries.
The Respondent has legitimate rights insofar as the Domain Name has been used since 1999-2000, as a part of “Internet Amele Birligi”. The Domain Name was used as <milliyet.net> until 2003. Since 2003, it has been forwarded to <amele.com>.
The Domain Name is used for a free e-mail service on the website of “Internet Amele Birligi”.
The Respondent and his organization called “Internet Amele Birligi” are known by the Turkish Internet community, even by the Complainant itself who wrote an article on September 4, 1999 about Respondent's free e-mail service. Complainant wrote positively about “Amele”. The article mentioned as background “a group of young people who did try to do something to help the development of Internet in Turkey since early 1990. They created the address amele.com where users receive free e-mail.”
The Respondent has been using the Domain Name since 2000 with non commercial aims.
“Internet Amele Birligi” does not have “improper content”; a free e-mail service cannot be improper.
Consequently, the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent to divert consumers for commercial gain or to tarnish the trademark or service mark at issue.
The Respondent also contests that it has registered and used the domain name in bad faith.
First of all, the Respondent did not register the Domain Name to sell it to the Complainant or to third parties. The Domain Name has been in use since 2000 as part of “Internet Amele Birligi” which is a non-profit cyber organization.
<milliyet.net> was registered only because it is generic, i.e. a word used by hundred million people, part of the Turkish language, culture and nationality with its customs and thoughts.
The Domain Name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.
The Complainant and its group are already reflecting their mark in the domain names listed in Annex-A-2. <milliyet.com.tr> was registered by the Complainant on October 15, 1996. However, the Complainant did not care to register the domains with “com”, “net”, “org” extensions. The Complainant indicates being the legal owner of the domain name <milliyet.com>, but according to “Whois Search”, <milliyet.com> belongs to “Superonline inc”.
Furthermore, the Complainant and the Respondent are not competitors and the Domain Name was not registered by the Respondent primarily to disrupt the Complainant's business.
The Respondent's website, known as “amelebaşı” (chief of workers) and “amele”, did never have any relation with the Complainant. In the past, the Respondent offered different content services like IRC (Chat), daily contents (comic pictures, poem, humour, speech…), polls, weather, free e-mail, free web and Internet café directory list of Turkey.
The “Amele”-website currently uses the Google mail service as free e-mail.
It follows from the foregoing that the Respondent does not offer any media services. The Respondent has never been a competitor to the Complainant. It must also be pointed out that the Respondent started its presence on the Internet before the Complainant.
The Respondent also rejects the complaint that the Domain Name was registered by the Respondent in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Domain Name was registered because of the fact that the word “Milliyet” is generic and widely used; there can be no confusion with the Complainant's trademark.
Finally, the Respondent invites the Panel to make a finding of reverse domain name hijacking against the Complainant in the sense of paragraph 15(e) of the Rules. The Respondent sees the essence of such a finding in the fact that the Complainant is claiming a generic term. In this regard, the Respondent also refers to other complaints filed by the Complainant, like <fanatik.com>, DOGAN GAZETECILIK A.S. v. OOO WWWServer, WIPO Case No. D2008-0500 (complaint denied); <hurriyet.net>, Hurriyet Gazetecilik Ve Matbaacilik A.S. v. INFOMED, WIPO Case No. D2008-127 (complaint denied); <hurriyet.com>, Hurriyet Gazetecilik Ve Matbaacilik A.S. v. Hurriyet.com, WIPO Case No. D2007-0596 (transfer); <hurriyet.org>, Hurriyet Gazetecilik Ve Matbaacilik A.S. v. Firat Birden, WIPO Case No. D2008-0126 (transfer); <milliyet.org>, Dogan Gazetecilik A.S. v. Chris Sloan, WIPO Case No. D2008-0753 (terminated).
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant alleges being the holder of various national and international trademarks containing the word “Milliyet”.
However, some of the marks to which the Complainant refers have been registered in the name of companies probably belonging to the Dogan Media Group but for which the Complainant has failed to demonstrate the legal links with the Complainant who is “Dogan Gazetecilik A.S., Dogan Medya Center”.
This is for instance the case for the wordmark MILLIYET which has been registered in the name of “Milliyet, Verlags- und Handels GmbH” domiciled in Neu-Isenburg (Germany) on March 12, 1998.
The Panel has however found other trademarks with designs prominently displaying the word “Milliyet” which have been registered by Dogan Gazetecilik A.S. with the Turkish Patent and Trademark Office. They can all be qualified as being similar to the Domain Name. This is also the case for the word mark MILLIYET KARDES which has been registered by “Dogan Medya Center” (mentioned as Complainant under Dogan Gazetecilik A.S.) on March 23, 1994 in class 16.
The Panel is therefore satisfied that Complainant has shown trademark rights in respect of the word “milliyet”.
Consequently, the Panel finds that for the purpose of paragraph 4(a)(i) of the Policy the Domain Name is confusingly similar to at least one of Complainant's trademark.
The Panel has hereby considered Respondent's argument that “Milliyet” is a generic term meaning “nationality” which cannot be monopolised by the Claimant. This consideration may under certain circumstances be correct for a pure word mark but not necessarily for a trademark and design. In any event, the Panel has no possibility to call into question the Turkish Patent and Trademark Office's decisions in the framework of this procedure.
B. Rights or Legitimate Interests
In its Response, the Respondent set out in extenso that its “Amele”-organisation and website would be of non-profit and non-commercial character.
The Panel finds that the Respondent misses the point. The domain name at stake is not <amele.net> but <milliyet.net>. “Milliyet” means under its generic signification “nationality” as evidenced by the Respondent. In order to prove a right or legitimate interest, the Respondent could for example have submitted evidence that he is using the Domain Name for a website with material expressing concepts, ideas, etc. which are somehow linked with “nationality”. However, the Respondent failed to submit such evidence and rather concentrates its arguments on the “amele” domain name and website content which is not relevant under paragraph 4(c) of the Policy to the Domain Name at issue here.
The “amele” domain name is only involved insofar as the Respondent diverted the Domain Name to <amele.net>.
The Panel also notes that the Respondent has failed to establish its ideas with regard to the use of the Domain Name that would amount to “demonstrable preparations to use” in the sense of the Policy.
In addition, the Respondent, it seems, is not commonly known by the Domain Name, and has not contested Complainant's assertion that the latter has not granted the Respondent any permission to use its trademark(s).
The Panel therefore finds for the purpose of the present proceedings that the Respondent has failed to establish rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel holds first of all that there is no evidence that the Respondent has attempted to sell the Domain Name to the Complainant as the legitimate trademark holder (Paragraph 4(b)(i) of the Policy).
The Respondent diverts the Domain Name towards its “amele”-website. It appears from the English version of this website that it is a non-commercial website offering in essence free e-mail. It is not clear what other purposes are pursued by this website but the Complainant has not shown any bad faith with regard to its contents, for instance that Respondent would make profit by a pay-per-click agreement or similar; hence, there is no dispositive proof for a case under Paragraph 4(b)(iv) of the Policy.
There is further no compelling evidence that the Respondent registered the Domain Name with the intention of blocking the Complainant in the sense of Paragraph 4(b)(ii) of the Policy, nor that the Respondent engaged in a pattern of such conduct.
Among the many other generic domain names that the Respondent registered is also “turkcell” which would be the name of a Turkish cellphone company according to the Complainant. However, this single domain name does not of itself prove any “pattern”, leaving beside the fact that the Complainant did not submit any evidence that “turkcell” is a registered trademark.
In addition, the Panel notes that the Complainant waited some 9 1/2 years to file the present Complaint. Under certain legal systems, like for instance in Switzerland, a complainant who sues a person for intellectual property infringement after such a long period, may be considered as having forfeited its rights.
The Respondent seems to have been in possession of the Domain Name all of this time without actively disturbing the Complainant and – apparently – the Complainant did not feel disturbed either. This is a further indication for the Panel that a finding of bad faith would not be appropriate in this particular case.
Moreover, the Complainant's trademark is composed of a generic term, and the Domain Name appears to have been registered following the “first come, first served” principle.
The Complainant alleges that the Respondent has indicated false contact information, behaviour that, if proven, could well amount to bad faith. However, the Panel notes that the notification by WIPO has been successful and that the Respondent filed a Response. There is hence no indication of bad faith in this respect either.
In view of the above, the Complainant has therefore not satisfied the Panel that the Domain Name was registered and is being used in bad faith.
The Respondent invites the Panel to examine a finding of reverse domain name hijacking against the Complainant. However, the Panel is of the opinion that the Complainant's filing and the content of the Complaint do not require such a finding here. The Complainant had valid trademarks and was of the opinion that the Respondent engages in inappropriate actions by diverting the Domain Name to a website with small valuable content. The Panel can not find any compelling bad faith intention behind such a proceeding, and so declines to make a finding of reverse domain name hijacking against the Complainant.
For all the foregoing reasons, the Complaint is denied.
Thomas M. Legler
Alan L. Limbury
Sir Ian Barker
Date: August 27, 2008